PTAB

IPR2020-00921

Philip Morris Products SA v. RAI Strategic Holdings Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Tobacco-Containing Smoking Article
  • Brief Description: The ’268 patent relates to an electrically powered "heat-not-burn" smoking article designed to heat a tobacco-containing consumable to generate an aerosol for inhalation, rather than burning the tobacco.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 16 over Morgan, alone or in view of Collins, Adams, and/or Brooks

  • Prior Art Relied Upon: Morgan (Patent 5,249,586), Collins (Patent 5,865,185), Adams (Application # 2007/0102013), and Brooks (Patent 4,947,874).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Morgan, an expired patent assigned to Philip Morris, discloses every element of independent claim 16. Morgan teaches an electrical smoking article with a reusable outer housing and a removable, disposable, cigarette-like carrier device. Petitioner contended that this disposable portion—comprising a filter segment (the "tubular mouth-end piece") and a paper-wrapped, tobacco-containing flavor segment (the "tubular cartridge")—fully anticipates the claimed structure. Morgan also discloses the requisite internal power source, a controller, and electrical resistance heaters that contact the tobacco material.
    • Motivation to Combine (for §103 grounds): The additional references were presented to address potential narrower claim constructions that might be advanced by the Patent Owner.
      • A POSITA would combine Morgan with Collins to incorporate a separate, open-ended tubular cartridge inside the tobacco portion. The motivation was to use a known technique from a similar device to prevent aerosol from staining the permanent, reusable housing.
      • A POSITA would combine Morgan with Adams to add a separate, removable mouthpiece. The motivation was to provide additional structural support to prevent the consumable from disengaging during use and to create a cooling region for the aerosol, thereby improving the user experience.
      • A POSITA would combine Morgan with Brooks to implement a sophisticated puff-actuated controller. The motivation was to use a well-documented prior art controller, which the ’268 patent itself incorporates by reference, to achieve accurate and reliable current regulation.
    • Expectation of Success: A POSITA would have had a high expectation of success, as these combinations involved integrating known components from analogous smoking devices to achieve their predictable functions.

Ground 2: Obviousness of Claims 16 and 17 over Counts-962, alone or in view of Brooks

  • Prior Art Relied Upon: Counts-962 (Patent 5,144,962) and Brooks (Patent 4,947,874).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Counts-962, which was cited but not applied during prosecution, discloses all limitations of claims 16 and 17. Counts-962 teaches a tubular, electrically powered smoking article with an internal power source and a removable carrier device. This carrier device includes a flavor-generating medium (which may be tobacco and an aerosol precursor) contained within a tube ("tubular cartridge") and a filter ("tubular mouth-end piece"). Critically, Counts-962 discloses its heating element is placed around and in contact with the flavor-generating medium, a key feature the patent owner used to distinguish other prior art during prosecution. Furthermore, an embodiment in Counts-962 shows a heater positioned between the power source and the flavor cartridge to preheat air, directly teaching the limitation of dependent claim 17.
    • Motivation to Combine (for §103 grounds): As in Ground 1, a POSITA would combine Counts-962 with Brooks to integrate a proven, sophisticated controller for regulating current flow to the heater, a standard design choice for improving device performance and reliability.
    • Expectation of Success: A POSITA would have reasonably expected success in adapting the well-known Brooks controller for use in the Counts-962 smoking article, as it represented a simple substitution of one known electronic component for another to perform its conventional function.

  • Additional Grounds: Petitioner asserted that claim 17 is also obvious over the primary combination of Ground 1 (Morgan et al.) when further combined with Counts-962. This combination was argued to render obvious the placement of the heater between the power source and the cartridge.

4. Key Claim Construction Positions

  • "rod-shaped carrier device ... comprising a tubular mouth-end piece and a tubular cartridge": This term was central to Petitioner's alternative arguments. Petitioner argued for a broad construction where the term is satisfied by a conventional cigarette-like consumable (e.g., Morgan's disposable portion with its filter and wrapped tobacco). Alternatively, should the Board adopt a narrower construction requiring a separate, distinct cartridge located inside the tobacco portion (as depicted in Figure 2 of the ’268 patent), Petitioner argued that the combination of Morgan and Collins teaches this feature.
  • "controller": Petitioner argued that this term should be given its plain and ordinary meaning and does not invoke 35 U.S.C. §112, ¶6. However, in the alternative, if the term is construed as a means-plus-function term, Petitioner contended that the ’268 patent specification explicitly identifies the controller disclosed in the Brooks patent as a suitable corresponding structure for performing the recited function of regulating current flow.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 16 and 17 of the ’268 patent as unpatentable.